Sound Board

Our thoughts and views on the practice of Intellectual Property in India and around the world.

The doctrine of prosecution history estoppel is popularly associated with patent litigation. In the context of patents, the doctrine constitutes a legal defence to an assertion of infringement whereby the Examiner determines the scope of infringement by examining if there is an overlap between the elements of the impugned products/process in light of the claims of patent, rather than a literal infringement of the same. Although not as apparent as in patent prosecution, prosecution history…

Branding is important because not only does it create a memorable impression among the public, but it allows consumers to know what to expect from your company. It is a way of distinguishing your brand from the competitors. One of the most essential factors of starting a new business is choosing the right name for it. Get that wrong, and it is no exaggeration to say that your brand will sink even before it has a chance.

Not very long ago, the Indian Designs Office notified the Designs (Amendment) Rules, 2021 and now the Copyright Office (hereinafter referred to as ‘CRO’) too has notified the Copyright (Amendment) Rules, 2021. The Copyright Rules, 2013 was last amended in the year 2016 subsequent to which, it was done recently.

However, the question remains - why has an option for renewal not been provided? Granted, it would ensure fewer instances where the right would have lapsed, and the protection would continue unbeknownst to the authorities (although the right holder must inform customs authority when his intellectual property ceases to be valid or if he ceases to be the owner of such intellectual property right). In this respect, the lack of an option for renewal enables authorities to properly examine the…

The Australian government recently passed legislation that has the potential to completely rework the way in which news is disseminated on the internet. The Australian News Media Bargaining Code, passed by the Australian legislature in February 2021, seeks to mandate that Big Tech companies like Google and Facebook pay news producers in order to use their content. The timing of the move appears in line with developments around the world, with calls to regulate Big Techs seen all across the…

The recent spat between BigBasket and Daily Basket borders on this blur. BigBasket, the largest online grocery store in India slapped a Cease-and-Desist notice on Daily Basket, a young startup, alleging infringement of their trademark. They claimed that the mere mention or reference of a name containing “basket” in word or logo form for any E-commerce business and related products would confuse the relevant class of consumers into assuming association with BigBasket.

In a competitive global market, businesses need to strive to get ahead of their competitors. One of the ways to do this is by creating unique brand identities which help make a strong impact on the minds of consumers. Trademarks are especially useful in this respect, as consumers can easily make connections with their favourite products and services with the businesses that provide them, which in turn can ensure consumer loyalty.

Businesses which have (or are) trying to register their trademarks in several countries would be familiar with the concept of priority rights. If a person has applied for registration/registered a mark in his home IP office at Country A, then on the basis of the original application, he can apply for the registration of his mark in Country B, claiming a “priority date” (from the original application in Country A) whereby his mark will be considered to be registered as on the date of application…

The procedure and timeline to obtain registration for a trademark have evolved over time.  After the amendment of 2017, the entire timeline has become quite stricter and quicker. We have all seen a lot of positive changes happening in the IP regime, however, there are still areas where we lag and would do extremely well to have clearer rules and laws, especially with respect to trademark applications under the Madrid protocol.

Businesses in India have often been started by using the surname or family name of the person starting such business. This practise has been followed in India for a very long time and such practice of adopting a surname for the name of the business is done purely so that customers can easily associate the surname so adopted with that particular business.